Revision of the Notice of Allowance and Fee(s) Due
Form (PTOL-85) Concerning a Previously Paid Issue Fee
The United States Patent & Trademark Office (Office) is
revising the Notice of Allowance and Fee(s) Due form (PTOL-85) to
always reflect the full issue fee due, even when there was a previously
paid issue fee in the same application. Thus, the issue fee amount
shown will no longer reflect a provisional credit of any previously
paid issue fee in the same application. Applicants can request
reapplication of any previously paid issue fee by either submitting
Part B of form PTOL-85, which contains a statement requesting the
reapplication, or an equivalent paper. Such a submission will also
confirm applicant's intention to have the application issue as a
patent. The Office will soon revise form PTOL-85 to reflect the full
issue fee amount due as well as separately indicate the amount of any
previously paid issue fee, which can be reapplied upon request. Any
previously paid publication fee in the same application will continue
to satisfy the obligation to pay a publication fee, and this will
continue to be reflected on form PTOL-85 by an indication that no
publication fee is due.
Under the former practice, the amount of the issue fee
specified on form PTOL-85 reflected a provisional credit for any issue
fee previously paid in the application. For example, if applicant had
previously paid the issue fee (and publication fee) in response to a
first form PTOL-85, and applicant subsequently withdrew the application
from issue and filed a Request for Continued Examination (RCE) in which
the application was later allowed, the second form PTOL-85 reflected an
issue fee amount equivalent to the difference between the current issue
fee and the issue fee previously paid. If no fee increase was in effect
at the time of the mailing of the second form PTOL-85 and if applicant
had previously paid the full amount due for both the issue and
publication fees, the second form PTOL-85 reflected an amount of $0
fees due.
Some applicants, however, were confused when the form PTOL-85
specified an amount of $0 for the fee due, and failed to return the
required Part B of form PTOL-85, or its equivalent. To eliminate the
point of confusion, the Notice of Allowance and Fee(s) Due form
(PTOL-85) will now always reflect the full issue fee amount currently
due.
After the mailing of a notice of allowance, an applicant can,
as an alternative to paying the issue fee, file an additional RCE to
continue prosecution of the application, or permit the application to
go abandoned. Since paying the issue fee is not the only option for an
applicant, the Office must receive, after the notice of allowance has
been mailed, express authorization to reapply any previously paid issue
fee. Without receiving applicant's express authorization, the Office
cannot know applicant's intentions with respect to the application and
whether or not the previously paid issue fee should be applied.
Therefore, the applicant must affirmatively authorize
reapplication of the previously paid issue fee after the mailing of the
notice of allowance by returning Part B of form PTOL-85, or an
equivalent. This is analogous to the Office's requirement that
applicant, after a notice of allowance has been mailed, provide
authorization if monies in a deposit account are to be used to pay an
outstanding issue fee (see 37 CFR Sec. 1.311). In both instances, the
Office must have confirmation of applicant's intention to pay the issue
fee before monies within the possession of the Office may be applied.
Therefore, in the situation where an issue fee has been paid, and
another notice of allowance is subsequently mailed, applicants are
required to timely reply to the Notice by submitting a completed Part B
of the form PTOL-85, or its equivalent, in order to request the
reapplication of the previously paid issue fee (as of the filing date
of the returned Part B), and to update assignee and attorney data.
Applicants are reminded that the amount of the issue fee owed
is determined by the date of payment. Therefore, even if reapplication
of a previously paid issue fee is requested, applicant must pay any fee
increase in effect at the time of filing a completed Part B of form
PTOL-85, or its equivalent.
As noted above, the filing of an equivalent of Part B of form
PTOL-85 is permitted. If applicant does file an equivalent paper, there
must be a conspicuous statement requesting reapplication of a
previously paid issue fee (in the same application). Due to the
inherent difficulty in recognizing a paper as an equivalent of Part B
of form PTOL-85, considerable delays in processing may occur.
Applicants, therefore, are strongly encouraged to utilize Part B of
form PTOL-85 to ensure rapid and efficient processing of the paper by
the Office.
Questions related to the receipt of issue and publication fee
payments should be directed to the Customer Service Center of the
Office of Publications by telephone at 888-786-0101, or at (571)
272-4200. Questions of a legal nature may be directed to Brian Hanlon
(by phone (572) 272-7743 or by e-mail to brian.hanlon@uspto.gov) or to
Cynthia Nessler (by phone (572) 272-7724 or by e-mail to
cynthia.nessler@uspto.gov), Legal Advisors, Office of Patent Legal
Administration.
June 12, 2006 JAY P. LUCAS
Deputy Commissioner for
Patent Examination Policy